Genset Power Solutions Pty Ltd v Murray Hardinge

[2025] ATMO 87

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Genset Power Solutions Pty Ltd to registration of trade mark application 2293633 (classes 7, 35, 37, 40) – EASTERN GENERATORS – in the name of Murray Hardinge

Delegate:

Nicholas Smith

Representation:

Opponent: Peter Creighton-Selvay of counsel instructed by Daniel Kovacs of KCL Law

Applicant: Lisa Egan of Mills Oakley

Decision:

2025 ATMO 87

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 58, 59 and 60 considered – s 59 established in respect of a subset of the goods and services – amendment made deleting the goods and services for which the s 59 ground has been established – no other grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Genset Power Solutions Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Murray Hardinge (‘Applicant’): 

Application Number:	2293633
Filing Date[1]:	15 August 2022
Goods and Services:	Class 7: Diesel electric generators; electric alternating current generators; electric current generators; electric generators; electric power generators; electric power supplies (generators); electricity generators; emergency power generators; gas operated power generators; generators; generators of electricity; power sources (generators); reserve electric power supply apparatus (generators).; none of the foregoing designed for use in relation to elevators, lifts, escalators and travelators; none of the foregoing designed for use in relation to elevators, lifts, escalators and travelators Class 35: Retail services; retail services featuring electricity services of others; retail services for goods (by any means); wholesaling of goods (by any means); retail and wholesale services in this class relating to electricity generators; retailing and wholesaling of goods by any means (including online); online retail services.; none of the foregoing including any services relating to elevators, lifts, escalators and travelators; none of the foregoing including any services relating to elevators, lifts, escalators and travelators Class 37: Installation of electricity generators; machine installation, maintenance and repair; installation, maintenance and repair of electricity generators; repair, maintenance and advisory services in relation to the installation, maintenance and repair of electricity generators, being repair, maintenance and installation advisory services. Class 40: Generation of electricity; Hire of electricity generators; rental of electricity generators. (‘Applicant’s Goods and Services’)
Trade Mark:	EASTERN GENERATORS	(‘Trade Mark’)
Endorsements:	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 27 November 2023.  The SGP raised grounds of opposition under ss 42(b), 58, 59, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 20 December 2023. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Ben Cresswell, director of the Opponent (‘Cresswell declaration’)	20 March 2024	BJC-1 to BJC-18
Evidence in answer
Murray Hardinge, the Applicant (‘Hardinge declaration’)	25 June 2024	1 to 6

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  Both parties requested a hearing by video conference.  The matter was set down for a hearing on 8 April 2025 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 21 February 2025 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 25 March 2025 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 1 April 2025 (‘Applicant’s Submissions’).  At the hearing Lisa Egan (assisted by Eden Tsiaples) of Mills Oakley represented the Applicant and Peter Creighton-Selvay of counsel instructed by Daniel Kovacs of KCL Law represented the Opponent.

2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

3. The Opponent is an Australian company incorporated on 19 February 2018.  

4. The relevant claims/statements in the Cresswell declaration can be summarised as follows:

   ·     Since 2018 the Opponent has been engaged in the sale, rental, installation, delivery, service and repair of electric generators.  In November 2020 it purchased a business that was trading under the company name Eastern Generator Hire Pty Ltd which was established under that name on 29 June 2018.  Upon its purchase of Eastern Generator Hire Pty Ltd it registered the business name Eastern Generator Hire from 30 November 2020.

   ·     From November 2020 the Opponent used the logo depicted below (‘First Logo’) for its business, which was the same logo used by the predecessor company.

   ·     The logo above was depicted in signage at the Opponent’s current worksite. In 2022 the Opponent refreshed its branding to the logo below (‘Second Logo’)

   ·     The Opponent ordered approximately 500 stickers depicting the Second Logo on 14 August 2023.  In 2022 it purchased stickers depicting the First Logo.  The Opponent updated its signage depicting the Second Logo in June 2022.  The Opponent also promotes its business using marketing flyers, which were produced in 2022.  As of the date of the declaration it has produced and distributed 500 flyers.  It also uses the Second Logo on stationary, business cards (approximately 1000), keyrings (approximately 200), uniforms (100 shirts, 50 jackets and vests and 20 hats and beanies).  The Opponent also displays the First and Second Logo (initially the First and subsequently the Second Logo) on its fuel cells and generators as well as its vehicles.

   ·     The Opponent promotes its business under the First and Second Logo, including through its website at and its Instagram page.  The Opponent also engages in marketing and sponsors the Yarra Valley Racecourse

   ·     The Applicant registered the business name EASTERN GENERATORS on 1 July 2019 and is located approximately 35 kms from the Opponent.  The Applicant has also registered the business name YARRA VALLEY GENERATORS and predominantly trades under the trade mark SECOMM.

   ·     The parties have exchanged letters in an attempt to settle the dispute and on 11 October 2022 the Applicant’s solicitors sent a letter to the Opponent soliciting a settlement offer by which the Applicant would transfer the business name for payment of a sum substantially greater than $5,000.

5. The annexures to the Cresswell declaration include evidence of marketing spend, which is very low, and revenue figures, which are low prior to FY22 and moderate thereafter.  They also include extracts from the Opponent’s website dating back to February 2020 (prior to November 2020 the Opponent’s website was operated by the predecessor entity) and various marketing materials that display the First and Second Logos.  Finally, the annexures also include various company search and business name registration reports.

   The Applicant

6. The relevant claims/statements in the Hardinge declaration can be summarised as follows:

   ·     The Applicant is an individual who since 2019 has operated a generator sale, hire, installation and repair service by reference to the Trade Mark.  The Applicant registered the business name EASTERN GENERATORS on 1 July 2019 and at the time he registered the business name was not aware of any other businesses using the same name.

   ·     The Trade Mark is used to promote and advertise the Applicant’s business and is depicted on flyers, vehicles and generators and is part of the domain name <easterngenerators.com.au>, which the Applicant has registered but not yet used.

7. The annexures to the Hardinge declaration include evidence of the Trade Mark being used on the Applicant’s flyers, vehicles and generators.  They also include evidence of invoices displaying the Trade Mark in connection with the Applicant’s business dating from August 2019,  and revenue figures which are low. 

   Grounds of Opposition, Onus and Standard of Proof

8. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 59, 60 and 62A but in its written submissions indicated that it only sought to press the grounds under ss 58, 59 and 60. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

9. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 59

10. Section 59 is reproduced below:

    Section 59 - Applicant not intending to use trade mark
    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)    to use, or authorise the use of, the trade mark in Australia, or

    (b)    to assign the trade mark to a body corporate for use by the body Corporate in Australia;

    in relation to the goods and/or services specified in the application.

11. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 15 August 2022.[5]

    [5] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31] (Hearing Officer Kirov). The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (Dodds-Streeton J) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (Keane CJ, Stone and Jagot JJ).

12. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd where he stated:

    In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[6]

    [6] [2008] FCA 100, [160].

13. There is a presumption that where an application has been filed the applicant, the applicant has the requisite intention.[7]  However:

    There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

    The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[8]

    [7] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, 401 (Fullagar J) (‘Aston’).

    [8] Ibid [162]-[163] (citations omitted).

14. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

    The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[9]

    [9] Ibid [161] (citations omitted).

15. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.  The relevant intention requires that an applicant must have ‘a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered’.[10] There must be ‘a real and definite intention’ to use the mark publicly as a trade mark in connection with the goods and/or services applied for.[11]

    [10] Re Ducker’s Trade Mark (1928) 45 RPC 397, 402.

    [11] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [158] (Jacobson J).

16. Where the specification of goods and services in an application extends well beyond the goods or services in respect of which the applicant has previously used the mark, and the applicant has come nowhere near to launching the mark in relation to such goods or services, that is

    indicative of an approach to registration that is not aligned with genuine intention, but rather to a desire to cover a field beyond the range of expected or intended use. Such an approach diminishes the benefit of any imputation arising from the fact of registration itself in the sense contemplated in Aston.[12]

    [12] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J) (‘Goodman Fielder’).

17. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Applicant opportunistically registered a business name corresponding with the opposed trade mark and has indicated in a conversation with a representative of the Opponent that he would contemplate selling the business name to it for a significant fee.  The Opponent understands that the Applicant’s primary trade is under “SECOMM GENERATORS” and not the opposed trade mark.  It is also the registered owner of YARRA VALLEY GENERATORS business name. 

18. In the present case I am satisfied that at the relevant date the Applicant did have the intention to offer a generator sale, hire and repair service in Australia and hence use the Trade Mark in Australia in connection with a generator sale, hire and repair service.  This is entirely consistent with the Applicant’s evidence and in particular paragraphs 8 and 10-13 of the Hardinge declaration.  The evidence illustrates that the Applicant has used the Trade Mark to promote and advertise the Applicant’s business which is involved in the retail, hire and service of generators and is depicted on flyers, vehicles and the generators offered for hire by the Applicant.  The Applicant also gives evidence that as early as 2019, well prior to the relevant date, he had registered EASTERN GENERATORS as a business name and had used the Trade Mark on invoices and signage, again supporting the inference that at the relevant date he intended to use the Trade Mark as a badge of origin for his business.

19. Furthermore, in this case, I am not satisfied that any statements made by the Applicant regarding the possibility that he would sell his business name to the Opponent reflect a lack of intention to use the Trade Mark (or any other malign intent); rather they are appropriately characterised as an attempt to explore settlement opportunities in circumstances where two competing companies are using similar names to offer similar goods and services. 

20. However, the breadth of the Applicant’s Goods and Services goes well beyond what one would expect of a generator sale, hire and repair service.  For example, the Applicant seeks to register the Trade Mark for generators themselves.  Generators are complex industrial products manufactured by sophisticated engineering firms, which would appear to be well-beyond the capability of a business the size of the Applicant (and there is no evidence that the Applicant has taken steps to commence the design and manufacture of electricity generators).  The Applicant also seeks to register the Trade Mark for an extraordinary broad range of retail and wholesale services in class 35, which go well beyond the nature of the Applicant’s business, which appears to solely involve the sale, hire, installation and servicing of third-party generators.  The range of goods and services sought to be registered is sufficiently broad and implausible, that for the reasons set out in Goodman Fielder, the Applicant does not obtain the benefit of the imputation that would normally arise from the Application to register the mark.

21. Given the nature of the Trade Mark and the evidence filed by the Opponent regarding the limited scope of the Applicant’s business, I find that the Opponent has established a prima facie case that at the relevant date, the Applicant lacked the intention to use the Trade Mark for any of the Applicant’s Goods and Services other than those connected with a generator sale, hire and repair service.  The Applicant is legally represented and has clearly been put on notice (by the provision of the SGP and the Opponent’s EIS) that lack of intention to use is an issue in these proceedings.  It is therefore necessary to consider the Applicant’s evidence that at the relevant date it intended to use the Trade Mark for the Applicant’s Goods and Services, noting that there is no evidence of actual use beyond that of a generator sale, hire and repair service.  Paragraph 14 of the EIA contains the Applicant’s statement of intention provided after being placed on notice that the question of intention to use was a matter at issue. It states the following:

    I refer to the Opponent’s Evidence. The Opponent has indicated (at paragraph 46), that I opportunistically registered the Business Name to trade off the reputation of, or to cause deception and confusion in light of, the business which was then known as Eastern Generator Hire Pty Ltd. This is not the case. I filed for the Business Name as it is a legal requirement to have the name under which you trade registered, and I intended to, and subsequently did, use the Business Name. I subsequently filed for the Trade Mark to protect my rights in this name. 

22. I accept the statement above that the Applicant filed to register the Trade Mark in good faith, to protect the reputation of his business name for his business.  However, this statement does not establish an intention to use the Trade Mark for all the Applicant’s Goods and Services.  Furthermore, I find it exceedingly unlikely that, had the Applicant held an intention to use the Trade Mark in respect of all the Applicant’s Goods and Services, or indeed any of the goods and services other than those relating specifically to its generator sale, hire and repair service, there would be a complete absence of documents documenting that intention. 

1. The ground under s 59 has been established in respect of all the Applicant’s Goods and Services other than the services listed below (‘Remaining Services’): 

   Class 35: retail and wholesale services in this class relating to electricity generators.

   Class 37: Installation of electricity generators; installation, maintenance and repair of electricity generators; repair, maintenance and advisory services in relation to the installation, maintenance and repair of electricity generators, being repair, maintenance and installation advisory services.

   Class 40: Hire of electricity generators; rental of electricity generators.

   It remains necessary to consider the remaining grounds of opposition for the Trade Mark in connection with the Remaining Services.

   Section 58

2. Section 58 is reproduced below:

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

3. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[13]

   · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[14] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[15]

   [13] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J)..

   [14] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

4. The ground based on s 58 was particularised in the SGP as follows:

   The Applicant is not the first user of the opposed trade mark in Australia and is therefore not the true owner of the mark.  The first user of the trade mark (and minor variations thereon) is the Opponent and before it its predecessor in title whose use dates back to 2019, which is well before the priority date of the opposed trade mark (15 August 2022). This use is and has been in connection with goods being diesel electric generators, electric alternating current generators, electric current generators, electric power generators, electricity generators, emergency power generators, gas operated power generators and reserve electric power supply generators, retail services in connection with the aforesaid goods and related accessories, installation of electricity generators, installation of electronic apparatus, maintenance and repair of electrical apparatus, electrical apparatus repair, electric appliance installation, electric appliance repair, maintenance and installation advisory services, repair, maintenance and installation consultancy services, rental of electricity generators, hire of electricity generators and generation of electricity.  

5. The ground based on s 58 was particularised in the SGP as being limited to the Trade Mark and minor variants of the Trade Mark.  The Opponent, in its written submissions, relies on the use of the words EASTERN GENERATOR HIRE or the First Logo as a basis for establishing the ground of opposition under s 58.  The EASTERN GENERATOR HIRE mark was not identified in the SGP, nor do I accept that the EASTERN GENERATOR HIRE mark (or the First Logo) is merely a ‘minor variant’ of the Trade Mark as it contains the additional word HIRE and the term ‘generator’ is singular.  Nor do I accept that the Second Logo is a ‘minor variant’ of the Trade Mark as it contains an significant device element and 3 additional (albeit) descriptive) words.   

6. The function of an SGP is to clearly set out the particulars of the case an applicant has to meet.  The Opponent has had the opportunity to seek to amend its SGP to reflect its evidence and has chosen not to do so.  As such I will only consider this ground with respect to the evidence of the Opponent’s use of the Trade Mark and minor variants.  In the absence of any evidence of use by the Opponent of the Trade Mark and minor variants (all use being of the First and Second Logo and EASTERN GENERATOR HIRE) I find that the third element is not established.  As the Opponent must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58

7. For completeness, even if I had considered the scope of the SGP to encompass the Second Logo, I would not consider the Second Logo to be substantially identical to the Trade Mark and hence the first element would not have been satisfied.  Below, for the purposes of considering substantial identity, I set out the Trade Mark and the Second Logo.

   EASTERN GENERATORS        

8. In respect of the first factor, when considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[16]

   [16] [1963] HCA 66, [12].

9. The Full Federal Court in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd stated that:

   although everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[17]

   [17] [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ).

10. While this statement was made in respect of deceptive similarity, it is equally relevant when considering substantial identity.  The Trade Mark consists of the words EASTERN GENERATORS.  The Second Logo consists of the words EASTERN GENERATORS below which are the words ‘Hire’, ‘Sales’ and ‘Install’, as well as a prominent and distinctive device element consisting of the letters EG intertwined inside the circle.  Both the words EASTERN GENERATORS and the device element are essential features of the Second Logo.  In the absence of such a device in the Trade Mark I do not find that there is a total impression of resemblance that emerges from the comparison between the Trade Mark and the Second Logo and hence the respective marks are not substantially identical.

11. Finally, even if I had considered the scope of the SGP to encompass EASTERN GENERATOR HIRE and the First Logo, and found that EASTERN GENERATOR HIRE/the First Logo was substantially identical to the Trade Mark, I would not consider the Opponent’s evidence to be sufficient to establish an earlier claim to ownership.  Paragraphs 18 and 19 of the Opponent’s Submissions note the Applicant’s evidence of having commenced use in July 2019.  I am also satisfied that the Applicant’s evidence establishes use of the Trade Mark for the Remaining Services from July 2019 since the Applicant provides clear evidence of invoices bearing the Trade Mark for the Remaining Services shortly after July 2019 along with various marketing materials such as flyers bearing the Trade Mark, referring to the Remaining Services, and distributed in 2019.

12. The challenge in assessing the Opponent’s evidence is that the Opponent only acquired the business operating under the name EASTERN GENERATOR HIRE in November 2020; previously it had been operated by a third party.  The Cresswell declaration contains evidence that a third party registered the business name EASTERN GENERATOR HIRE in 2018 and when the Opponent purchased the business from the third party in November 2020 it paid what is submitted to be a significant price for the IP assets of the business (noting that the evidence of the price paid (and amount allocated to IP) is redacted).[18]  Neither of these factors show that the third party used EASTERN GENERATOR HIRE as a trade mark for corresponding goods and services prior to July 2019 (mere registration of a business name is insufficient to establish use as a trade mark as there is no evidence that a particular entity is actively offering goods and services under that name). 

    [18] The Opponent sought to provide evidence of the unredacted purchase price by filing an unredacted version of the sale deed the day before the hearing.  They did not serve this material on the Applicant.  Noting that the material was filed well out of time, there was no explanation for the delay and could have easily been filed as part of the evidence in support, I declined to have regard to this material pursuant to the provisions of regs 21.15 or 21.19.

13. Mr Creswell, in the Cresswell declaration, makes various assertions of use of the Trade Mark by the predecessor in title prior to November 2020 (such as those in paragraphs 16, 30 and 38 of his declaration).  However, he was neither involved with the business prior to November 2020, nor does he provide any explanation of when and how he became familiar with the EASTERN GENERATOR HIRE business.  In short, the Cresswell declaration contains assertions about the use of EASTERN GENERATOR HIRE which, on its face, the declarant would not have the ability to give. As such I do not accept his assertions of use prior to his involvement in the EASTERN GENERATOR HIRE business absent documentary support.  The only documentary evidence of use of the EASTERN GENERATOR HIRE mark by the predecessor business consists of Wayback Machine records; however they date from 29 February 2020 which postdates the date of first use by the Applicant.[19]

    [19] Confidential Exhibit BJC-8 contains evidence of the revenue of the Opponent’s business including figures from 2019-20, however in the hearing this was confirmed to be revenue from the Opponent’s business prior to its acquisition of the EASTERN GENERATOR HIRE business, not revenue from the EASTERN GENERATOR HIRE business prior to its acquisition by the Opponent.  

14. The Opponent makes submissions that it is open to me to infer prior usage of the Trade Mark from a number of factors; including the purchase price paid for the business in November 2020 and the fact that the business was sold as a going concern in November 2020 and had at least some revenue and advertising featuring the EASTERN GENERATOR HIRE mark at this time.  I do not make this inference sought by the Opponent; noting the burden of establishing this ground rests with the Opponent.  It was open for the Opponent to provide historical evidence of the business, including business records prior to the acquisition (as part of the purchase it likely would have obtained records of the business, such as tax records); it was open for the Opponent to provide evidence of Mr Creswell’s familiarity with the business prior to his purchase and it was open to the Opponent to provide evidence from individuals such as employees or former employees or customers who did have direct knowledge of the business prior to November 2020.  The Opponent’s failure to provide any evidence of use prior to November 2020 (other than the Wayback Machine records) tells against the submission that I reach the inference suggested by the Opponent; mere registration of a business name, absent any other evidence, is not a sufficient basis to infer use for a particular set of goods and services from a particular date.  Even if I had had regard to EASTERN GENERATOR HIRE for the purposes of this ground I would not find the s 58 ground established with respect to the Remaining Services.

    Section 60

15. Section 60 is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

16. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

17. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[20]

    [20] [2023] FCA 487, [20]-[21] (Kennett J)

18. In McCormick & Co Inc v McCormick,[21] Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[22]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[23]

    [21] [2000] FCA 1335.

    [22] Ibid, [81].

    [23] (1992) 33 FCR 302, 343.

19. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[24]

    [24] (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

20. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[25] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[26]

    [25] [2000] FCA 1587 (Heerey J).

    [26] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

21. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed.  The opposed trade mark is identical with the trade mark that the Opponent (and its predecessors in title) has used for its goods and services in Australia since 2018, being goods and services that are substantially the same as those the subject of the opposed trade mark namely diesel electric generators, electric alternating current generators, electric current generators, electric power generators, electricity generators, emergency power generators, gas operated power generators and reserve electric power supply generators, retail services in connection with the aforesaid goods and related accessories, installation of electricity generators, installation of electronic apparatus, maintenance and repair of electrical apparatus, electrical apparatus repair, electric appliance installation, electric appliance repair, maintenance and installation advisory services, repair, maintenance and installation consultancy services, rental of electricity generators, hire of electricity generators and generation of electricity.  The Opponent has acquired a substantial reputation in respect of EASTERN GENERATORS through its years of trading, use, promotion and advertising.  This pre-dates the priority date of the opposed trade mark by several years.

1. I refer to my comments in paragraph 17 above regarding the proper particularisation of a case.  The Opponent has provided no little or no evidence of any usage of the Trade Mark or an identical mark (as stated in the second sentence in the particulars above) prior to the relevant date and therefore it fails to satisfy the requirements of s 60(a). 

2. Even if I considered that the Opponent’s use of its various claimed marks including EASTERN GENERATOR HIRE and the First and Second Logos fell within the scope of the SGP, such use would fall well short of establishing the requirements of s 60(a).  The Opponent’s evidence of use between 2018 and November 2020 is, for the reasons set out under the s 58 ground, very limited.  Its evidence in the two years between 2020 and the relevant date indicates a very low level of marketing spend and very low sales figures prior to FY22 and moderate figures thereafter.  Much of the Opponent’s evidence of marketing occurred very close to or after the relevant date and in any event much of the sales or marketing is conducted under multiple different marks, making it difficult to establish a reputation in any individual mark at the relevant date.  In considering the material as a whole I am not satisfied that the Opponent has established a reputation in any of the marks referred to in the Opponent’s Submissions sufficient for the requirements of s 60(a).

3. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Resolution of Opposition

4. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[27]

   [27] [2014] FCA 1304, [232].

5. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

   I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[28]

   [28] [2014] FCA 373, [231].

6. In the present case, considering the clear evidence of use of the Trade Mark for the Applicant’s generator sale, hire and repair business, I consider it reasonable to offer an amendment to the Applicant’s Goods and Services to allow the Trade Mark to proceed to registration for the subset of Applicant’s Goods and Services for which the s 59 ground was not established, namely the Remaining Services.

7. On 14 May 2025 I provided the Applicant with an opportunity to amend its application to limit the goods and services to the Remaining Services. The amendment has now been made. On that basis I find that the opposition has not been established for the revised set of goods and services for which the Trade Mark is sought to be registered.

   Decision and Costs

8. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2293633 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

9. The parties have sought an award of costs in its favour.  As each side has had a degree of success I make no orders as to costs.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   20 May 2025